Archive for the ‘Green Patents’ category

Epistar Infringes But Can Challenge Validity of Philips LED Patent

June 7th, 2009

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Philips Lumileds Lighting Co. (Lumileds) and Taiwanese LED maker Epistar Corp. (Epistar) have a history of litigation involving Lumileds’ U.S. Patent No. 5,008,718 (’718 patent).

The ’718 patent is entitled “Light-emitting diode with an electrically conductive window” and is directed to an LED with a transparent window layer on top of the active semiconductor layers.

The transparent window layer (24) overlays the LED’s active p-n junction layers (21, 22, 23) of AlGaInP.  The transparent window layer (24) is made of a different semiconductor than the active layers, with a low resistivity and a bandgap greater than the active layers.

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As a result, the window layer (24) is transparent to light emitted by the p-n junction layers and therefore generates more uniform light emission and improves the efficiency of the LED.

In 2005 Lumileds filed suit against Epistar and United Epitaxy Company (UEC) in the U.S. International Trade Commission (ITC) alleging infringement of the ’718 patent.  Later that year, UEC merged into Epistar and ceased to exist as a separate entity.

Epistar has continued to manufacture certain UEC LED products, as well as its own AlGaInP LEDs.

Prior to the merger, back in 2001, UEC had settled another lawsuit with Lumileds involving the ’718 patent, and the settlment agreement provided that UEC and its successors could not challenge the validity of the patent.

A third lawsuit between Lumileds and Epistar in 2003-04 also ended with a settlement agreement.  Under that agreement, Epistar took a license to make particular LEDs, and with respect to those products, promised not to challenge the validity of the ’718 patent. 

The agreement was silent with respect to non-licensed products, preserving Epistar’s right to challenge the ’718 patent’s validity if Lumileds were to sue Epistar for infringement of other products in the future.

In the ITC case Lumileds moved for a summary determination that Epistar could not challenge the validity of the ’718 patent and argued that the merger with UEC bound Epistar to the UEC settlement agreement, which prohibited such a challenge.  

An ITC administrative law judge (ALJ) granted the motion, ruling that the UEC-Lumileds agreement precluded Epistar from contesting the validity of the ’718 patent with respect to any UEC or Epistar product.

Although the ALJ later acknowledged there were two separate settlement agreements at issue, by that time the ALJ found it was procedurally too late to change his ruling.

Epistar was subsequently found liable for infringement of the ’718 patent, and the ITC issued a limited exclusion order excluding from entry into the U.S. Epistar’s infringing LED products.  The exclusion order included downstream packaged LEDs containing the infringing LEDs regardless of the manufacturer or importer of these products.

Epistar appealed to the U.S. Court of Appeals for the Federal Circuit.  Last month, the Federal Circuit reversed the ITC rulings on the validity preclusion and the exclusion order.

The Federal Circuit discussed the two separate settlement agreements of UEC and Epistar and held that, with respect to its own products, Epistar could challenge the validity of the ’718 patent:

This court finds that Epistar’s right to contest validity of the ’718 patent with respect to its products is governed by its own separate agreement with Lumileds. . . .When Lumileds settled with Epistar, the settlement agreement addressed only the licensed products and thereby preserved Epistar’s unrestricted right to contest the validity of the patent in other contexts.  This court cannot allow Lumileds to escape its agreements due to a merger that does not disturb its contract with Epistar.

Epistar could be precluded from challenging validity only as to the UEC products:

Epistar (as successor to UEC) may not contest the validity of the ’718 patent with respect to the UEC products that it inherited in the merger.

The Federal Circuit also vacated the exclusion order and instructed the ITC to reconsider the order based on recent precedent holding that the ITC lacks statutory authority to exclude imported products by entities not named as respondents before the ITC. 

The court found that Epistar does not itself manufacture downstream products; instead other foreign entities incorporate the infringing LEDs in packaged LEDs and LED boards for importation into the U.S.

Metabolix Bioplastics Are Cleanly Made and Biodegrade

June 4th, 2009

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Metabolix is a Massachusetts biotech company that makes alternatives to petrochemical-based plastics. 

Metabolix’s bioplastic technology includes polymers known as polyhydroxyalkanoates (PHA) and enzymes that make these polymers.

According to this Seeking Alpha article, PHA are “linear polyesters produced in nature by bacterial fermentation of sugar and lipids.”  In other words, PHA are made by microoorganisms through photosynthesis.

CleanTechnica reports that Metabolix is working with the Strategic Environmental Research and Development Program to develop its bioplastic for military use in food packaging.

The company also formed a joint venture with Archer Daniels Midland called Telles to market its bioplastic, which it sells under the brand name Mirel.

Some of Metabolix’s key patents and applications include U.S. Patent Nos. 6,620,869 (’869 patent), 7,202,064 (’064 patent), 7,208,535 (’535 patent) and U.S. Patent Application Pub. No. 2008/0275208 (’208 application), which are directed to PHA biopolymer compositions.

These inventions include improved thin film formation through PHA pellet compositions (’869 patent and ’535 patent) and methods of making PHA compositions that can be readily extended to incorporate additional monomers by mutagenesis or genetic engineering of PHA-producing microorganisms (’064 patent and ’208 application).

Metabolix recently announced that its Mirel bioplastic resins have received the OK Compost Home certification (provided by Belgian inspection and certification firm Vincotte), which means that the materials will biodegrade in home composting systems of varying temperatures. 

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Its materials previously received the OK Compost certification for industrial composting.  (read about the Vincotte OK Compost certifications: vincotte_cb_05.pdf

Unfortunately, Mirel bioplastics are not yet cost competitive with plastics made from petroleum (Mirel sells at $1.50 per pound versus 70 cents per pound for traditional plastics), but the company believes that many customers will pay a premium for its cleanly made, compostable materials, especially in the disposable plastics market.

UK Intellectual Property Office Fast Tracks Green Patent Applications

May 31st, 2009

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The UK Intellectual Property Office (UKIPO) has launched an initiative to give priority to patent applications directed to technology having environmental benefits.

The initiative was announced this month by David Lammy, Minister for Intellectual Property, and took effect on May 12th.  Instead of the current average of 2-3 years for an application to get through the UKIPO, an application could be granted in just 9 months under this scheme.

The UKIPO press release describes the new procedure this way:

Accelerated search and/or examination of the patent application will be made available to any patent applicant who makes a reasonable assertion that the invention in the patent application is one which has some environmental benefit.  The application will be fully searched and examined by a technically-qualified patent examiner. 

Applicants can choose which aspects of the application process they want to accelerate, including search, examination, combined search and examination, and/or publication. 

From looking at the UKIPO Fast Grant Guide, it appears that the UK process does not require shifting much of the searching and examination burden to the applicant, as is the case with the U.S. Patent & Trademark Office’s expedited examination scheme.

The U.S. Petition to Make Special procedure, which is available in a number of instances, including for inventions relating to environmental benefits and energy development or conservation, requires the applicant to conduct a pre-examination search, submit a copy of the references deemed “most closely related” to the invention and describe how the invention is patentable over those references. 

These requirements can substantially increase the up front legal fees associated with filing a patent application and discourage applicants from taking advantage of the expedited process in the U.S.

Patent Suit Asserts Duramax Engines Under Kruse Control

May 28th, 2009

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Kruse Technology Partnership (“Kruse”) is an Anaheim, California partnership that owns several U.S. patents relating to its higher efficiency and cleaner burning diesel engines.

Last month Kruse filed its First Amended Complaint against DMAX, Ltd. (“DMAX”), an Ohio diesel engine manaufacturer formed as a joint venture between GM and Isuzu. 

The amended complaint (kruse_amended_complaint.pdf) alleges that DMAX’s Duramax engines infringe three related Kruse patents:  U.S. Patent Nos. 5,265,562 (“’562 patent”), 6,058,904 (“’904 patent”) and 6,405,704 (“’704 patent”).

The asserted patents are entitled “Internal combustion engine with limited temperature cycle” and are directed to Kruse’s “Limited Temperature Cycle” technology, which limits peak combustion temperatures in direct injection gas and diesel engines. 

The Limited Temperature Cycle injects fuel in multiple increments both before and after ignition.  According to Kruse’s web site, such injection of partial quantities of fuel reduces the combustion temperature, boosts thermal efficiency and reduces certain chemical emissions.

The asserted patents claim this process and describe an engine incorporating the invention.  The engine (10) comprises a block (12), a cylinder head (14) and a cylinder (16) having a piston (18). 

Fuel is supplied to the engine (10) by a fuel injection system (36).  The engine (10) also includes an air induction system (26) having an air intake valve (28) in the cylinder head (14).

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One key feature of the process is the maintainance of a proper fuel/air mix in the engine to reduce the temperature and the work of compression.  According to the ’904 patent, the fuel injection system (36) precisely regulates this fuel/air mixture for combustion and exhaust emission control.

The complaint requests that the court issue a permanent injunction against DMAX and award Kruse compensatory damages for the alleged infringement.

Nano a Nano: Rivals Spar Over Quantum Dot Patents

May 23rd, 2009

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Nanosys is a Palo Alto nanotechnology company specializing in high performance inorganic nanostructures, including quantum dots.  Quantum dots are nano-scale semiconductors that emit near-monochromatic light when subjected to light or electrical stimulation. 

Among the many applications of quantum dots are diode lasers, LEDs and solar cells, and Nanosys recently announced a new photovoltaics division called QD Soleil to focus on the solar field.

Nanosys is the exclusive licensee of several patents owned by the Massachusetts Institute of Technology relating to quantum dot technology.  These include U.S. Patent Nos. 6,861,155 (’155 patent), 6,322,901 (’901 patent), 7,125,605 (’605 patent, 6,821,337 (’337 patent) and 7,138,098 (’098 patent).

Last month, Nanosys sued its Manchester, U.K. rival, Nanoco Technologies (Nanoco), and Nanoco’s U.S. distributor, Sigma-Aldrich (Sigma), alleging that their quantum dot technology sold under the brand name Lumidots infringes these patents (nanosys_complaint.pdf).

The asserted patents include two patent families: the ’155, ’901 and ’605 patents are entitled ”Highly luminescent color selective nanocrystalline materials” and are directed to nanocrystal particles having a semiconductor core and a semiconductor coating that emit light in a narrow spectral range.  The core consists of cadmium sulfur, cadmium selenium or cadmium tellurium, and the coating is zinc sulfur or zinc selenium.

The ’337 and ’098 patents, entitled”Preparation of nanocrystallites,” are directed to nanocrystallite manufacturing methods.  The ’337 patent describes the method as follows:

The method includes contacting a metal, M, or an M-containing salt, and a reducing agent to form an M-containing precursor, M being Cd, Zn, Mg, Hg, Al, GA, In or Tl.  The M-containing precursor is contacted with an X-donor, X being O, S, Se, Te, N, P, As, or Sb.  The mixture is then heated in the presence of an amine to form the nanocrystallite.

The lawsuit was filed in the U.S. District Court for the Western District of Wisconsin, and Nanosys is requesting compensatory damages and a permanent injunction against Nanoco and Sigma.

New Alliance’s Big IDEA: Strong IP is Essential for Green Innovation

May 17th, 2009

In a timely push to demonstrate the critical role intellectual property (IP) is playing and will continue to play in the development of clean technologies, the U.S. Chamber of Commerce and business leaders will launch the Innovation, Development & Employment Alliance (IDEA) this Wednesday, May 20, 2009 (idea_launch_press_release.doc).

IDEA’s mission is to educate policymakers and the public about the fundamental role of IP rights in promoting innovation in the clean tech space.  The Alliance asserts that robust IP protection is needed to encourage investment in clean tech research and development, create green jobs and find solutions to the world’s energy and environmental challenges.

IDEA’s immediate priority is to urge Congress and the Obama administration to maintain strong IP protection for innovators as the U.S. engages in international talks related to the U.N. Framework Convention on Climate Change (UNFCCC).

I spoke with Caroline Joiner, the Vice President of the U.S. Chamber of Commerce’s Global Intellectual Property Center (GIPC), who expressed concern about the “anti-IP push” of the UNFCCC and called the talks “the IP battle of the year.”

What worries Ms. Joiner and other members of the Alliance are calls coming primarily from developing countries to weaken IP rights in energy efficiency and environmental technology.  Even the current U.S. Energy Secretary, Steven Chu, suggested weakening IP protections, advocating a “very collaborative” effort:  “by very collaborative I mean share all intellectual property as much as possible.”  (see the IP-Watch op-ed by David Hirschmann, President & CEO of the GIPC).

Advocates of this approach see a strong patent system as a barrier to technology transfer, especially in developing countries, and call for exceptions to the system such as compulsory licensing.  

However, their premise – that IP rights hinder tech transfer of clean technologies to developing countries and emerging markets – has been refuted recently by a European Commission report that found no evidence of any such IP-related barriers (see my post about the report here). 

The EC report found that there are hardly any clean tech patents in developing countries, and the high cost of implementation in these countries is more likely due to the immaturity of the technologies than to patent rights.  The report actually concluded that strengthening patent regimes in emerging markets could stimulate both local innovation and transfer of technologies from foreign patent holders.

IDEA has invited members of Congress and other policymakers to the launch event, which will be held at the National Press Club in Washington this week.  Ms. Joiner said the format will be a “roundtable discussion” of these issues.  The Alliance members attending the launch event include:

David Hirschmann – President & CEO, U.S. Chamber of Commerce’s Global Intellectual Property Center

Andy Cefranic – Bendix Commercial Vehicle Systems

Carl Horton – Chief Intellectual Property Counsel, General Electric

Bill Keith – President & CEO, Sunrise Solar

Susan Mann – Senior Director of Intellectual Property Policy, Microsoft

Japan Leads Electric Vehicle Patent Filings; Australia Sees Jump in Green Patents and Eco-Mark Applications

May 16th, 2009

There are a couple of recent stats and trends relating to green IP from the other side of the globe to report. 

First, as discussed at greentechmedia and Tech-On!, a survey of global patent applications relating to “electric propulsion vehicles” (defined as electric vehicles, hybrid electric vehicles and fuel cell vehicles) by the Japan Patent Office concludes that 70% of applications in this category are owned by Japanese applicants.

According to the survey, Japanese applicants accounted for 76% of the 9,034 applications filed between the years 1995 and 2000 and 69% of the applications filed from 2001-2006.

From Japan we turn south to Australia, which has seen trademark applications in the energy sector jump 250% in the last five years along with a substantial rise in clean tech patent applications (15% for solar and 50% for “clean coal” technology).

The Innovation Minister Senator Kim Carr discussed these trends in an Australian Labor Party Media Statement released on World Intellectual Property Day in late April (see Senator Carr’s press release here).

Thanks to the Gippsland Friends of Future Generations blog for its post on these green IP trends from down under.

Court Bounces Mizzou Patent Suit Against Professor

May 13th, 2009

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Galen Suppes is a chemical engineering professor at the University of Missouri and co-founder and Chief Scientific Officer of Renewable Alternatives, LLC (Renewable Alternatives). 

Suppes and former Mizzou grad student and post doc William Sutterlin founded Renewable Alternatives in 2003 to develop inventions relating to fuel cell technology, eco-friendly antifreeze and non-toxic diesel fuel additives.  According to Suppes, the university failed to recognize and pursue commercial prospoects for his research.

In January, the university sued Suppes, Sutterlin, Renewable Alternatives and another company called Homeland Technologies, LLC (alleged to be solely owned by Suppes) in federal court in Jefferson City, Missouri over ownership of certain technology developed by the defendants. 

The complaint (missouri_complaint.pdf) sought a declaratory judgment that the University of Missouri is the legal owner of inventions, patents and patent applications conceived and reduced to practice by Suppes and Sutterlin while they were employed by the university.  The complaint also alleged that Suppes and Sutterlin breached their employment agreements and asked the court to automatically assign the invention rights to the university.

The complaint listed U.S. Patent No. 6,574,971 (’971 patent) and requested that the court require the defendants to provide a listing of all other inventions, patents and applications they worked on during their employment with the university.

The ’971 patent is entitled “Fatty-acid thermal storage devices, cycle and chemicals” and relates to methods for producing fatty acid derivatives for use as phase change materials (PCM).  According to the ’971 patent, the simple process disclosed provides high conversions of feedstocks to useful PCM chemicals, which can be used to eliminate the need for air conditioning and shift load to non-peak demand times.

Last month, Judge Scott O. Wright granted Suppes’ and Homeland Technologies’ motion to dismiss the suit for lack of subject matter jurisdiction because the complaint failed to allege any violations of the federal Patent Act (missouri_order.pdf). 

Federal courts have jurisdiction over patent disputes only to the extent that federal patent law creates the cause of action or the requested relief necessarily depends on resolution of a “substantial question” of federal patent law.  Suppes had argued that neither applied here because the case was simply a contract dispute. 

The court agreed:

None of the relief sought by plaintiff is relief provided by the Patent Act.  The relief sought by plaintiff is based upon alleged violations of the plaintiff University’s rights under the University’s Collected Rules and plaintiff’s employment agreement with defendant Suppes.

Accordingly, the case was dismissed due to lack of subject matter jurisdiction, and the university will have to re-file in state court if it wants its claims adjudicated.

Court Quadruples Ongoing Royalty for Toyota’s Infringing Hybrids

May 8th, 2009

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In a previous post, I wrote about Toyota’s infringing hybrid drive train and the Federal Circuit’s order for the district court to reassess its ongoing royalty rate of $25 per infringing vehicle.

That decision affirmed a $4.3 million jury verdict that Toyota’s hybrid drive trains infringed U.S. Patent No. 5,343,970, owned by hybrid technology company Paice LLC (Paice), as an equivalent system but vacated the district court award of a $25 per vehicle ongoing royalty.

Last month, after considering new evidence on damages, Judge David Folsom of the U.S. District Court in Marshall, Texas ordered the rate increased to about $98 per infringing vehicle, or 0.48% on each Prius, 0.32% on each Toyota Highlander and 0.26% on each Lexus RX400h.

Before stepping in to reset the ongoing royalty rate, the court allowed the parties to go through mediation and exhaust their efforts to set a rate themselves.

According to the court order (paice_royalty_order.pdf), when an injunction is not proper, the question that should guide a court’s determination is ”what amount of money would reasonably compensate a patentee for giving up his right to exclude yet allow an ongoing willful infringer to make a reasonable profit?”

Judge Folsom decided to raise the rate for several reasons:  Toyota is now an adjudged infringer; higher oil and gas prices have made Paice’s hybrid technology more valuable and increased Toyota’s hybrid sales; Toyota’s hybrid vehicles help it meet the increased U.S. fuel efficiency standards; and the popularity of the infringing vehicles has enhanced Toyota’s reputation as a green company.

The court’s final calculation was based on application of a 25% “rule of thumb” to Toyota’s profit margin of 9%, which yields an initial figure of 2.25%.  The court then reduced that figure by one-third to 1.5% in view of the jury’s award for past damages and because Toyota makes less profit on its hybrid vehicles than its non-hybrids. 

Finally, the court excluded the value of the internal combustion engine (ICE) from the royalty base because it is not a core component of Paice’s invention.  Taking 1.5% of $6,500 (the value of the hybrid drive train less the ICE as determined by one of the economics experts in the case), the court arrived at a per-vehicle ongoing royalty of $98.

ITC To Investigate Six More Rothschild Accused Infringers

May 3rd, 2009

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In a previous post, I wrote about the U.S. International Trade Commission’s (ITC) investigation of a host of major electronics companies accused of infringing a seminal LED patent owned by Gertrude Neumark Rothschild.

The ITC recently began investigating six more companies, based in China and Taiwan, in response to another complaint by the retired Columbia University Professor.  The Notice of Investigation names Chi Mei Lighting Technology Corp., Tekcore Co. Ltd., Toyolite Technologies Corp., Tyntek Corp., Visual Photonics Epitaxy Co. and Xiamen Sanan Optoelectronics Technology.

The ITC is a federal agency that investigates trade and importation issues, including conducting quasi-judicial proceedings involving alleged infringement of intellectual property rights by importation of accused products pursuant to 19 U.S.C. § 1337.  It is a popular forum for patentees (though only injunctive relief is available, not monetary damages) because the proceedings progress much faster than those in the federal courts.

According to the Notice, the ITC will determine whether Section 1337 is violated by:

the importation into the United States, the sale for importation, or the sale within the United States after importation of certain light emitting diode chips, laser diode chips or products containing same that infringe one or more of claims 10, 12, 3, and 16 of U.S. Patent No. 5,252,499

The asserted patent is directed to methods of making LEDs capable of emitting short wavelength (green or blue) light.  The patent addresses the problem of “doping” wide band gap semiconductor materials, an essential step in creating adequate conductance for the materials to function as LEDs.  Doping means adding impurities to a semiconductor to increase the number of free charge carriers.

Undoubtedly, Rothschild hopes to continue her recent success enforcing her LED patents.  She has been aggressively litigating her patents and several companies have taken licenses, including Philips Lumileds, Epistar, Sony, Sanyo and others.